IP Australia has recently announced significant changes to the way excess claims fees are calculated and due for Australian patent applications. The changes will apply to patent applications for which examination is requested on or after 1 October 2024.
What is changing?
Currently, excess claim fees are payable based on the number of claims only at acceptance (allowance). If any excess claims fees are due, such fees are payable within three months of the advertisement of acceptance. In practice, this means that an applicant can enter examination with any number of claims and excess claims fees can be reduced or avoided by minimising the number of claims prior to acceptance.
Excess claims fees are calculated as follows:
- AU$125 for each claim from 21 to 30; and
- AU$250 for each claim from 31 onwards.
From 1 October 2024, excess claim fees will be based on the highest number of claims between issuance of a first examination report and acceptance. Whilst there will be no change to the amount payable per excess claim over 20, procedural changes will be such that excess claim fees will be payable at two time periods:
- within one month of issuance of a first examination report (based on the number of claims in excess of 20 at issuance of the first examination report); and/or
- within three months of the advertisement of acceptance (to cover any increases to the number of claims after the first examination report and which were not encompassed in the initial payment).
If any excess claims fees are due when the first examination report issues and are not paid, the application will lapse. However, the application can be revived if payment of the excess claims fee is made prior to the final date of acceptance (which is 12 months from the date of the first examination report).
The new practice will reduce flexibility for applicants, and particularly the ability to have high numbers of claims examined without necessarily incurring excess claims fees.
What can be done to avoid excess claims fees?
Currently, the timeframe for receiving a first examination report is approximately 12-18 months after examination is requested. In this regard, IP Australia has indicated it will issue a six-month warning to applicants or their representatives that examination is expected to begin to allow time to reduce the number of claims (by way of an amendment) before a first examination report issues.
Notwithstanding the proposed notification, applicants may wish to request examination before 1 October 2024 to avoid the procedural changes or to consider reducing the number of claims at the time of requesting examination.
Further information
More details of the changes and examples can be found here.
If you have any questions regarding the changes to excess claim fees, please get in touch.
